Appeal NO. 2005-0577
Application No. 09/741,237
since the prior art cannot be applied until the scope of these
claims on appeal can be ascertained.
Pursuant to the provisions of 37 CFR § 41.50(b)(2004), we
enter the following new ground of rejection.
Claims 1, 2, and 16 are rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter the appellant regards as his
invention. The legal standard for determining whether the
language in claims is definite under Section 112, second
paragraph, is whether one of ordinary skill in this art would have
been reasonably apprised of the scope of the claims, when the
claim language is read in light of the specification. See In re
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994).
Here, claims 1, 2, and 16 recite an optical core material
having an index of refraction that is “substantially similar” to a
photonic via. The language “substantially similar” is a “word of
degree” which is imprecise unless a definition or guideline has
been set forth in the specification or the term is otherwise well
known in the art. See Seattle Box Co. v. Industrial Crating and
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984). However, there is no evidence in this record that the
words “substantially similar” have any art-recognized meaning.
Nor is there any guidance or definition in the specification that
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